C&D letters, FYI, many are in error

**maxheadroom** · 10-08-2002, 10:36 PM

I'm just posting this, in the hopes it helps a few people.

I have a stack of C&D letters. So far, I've only lost one domain, and that was to a nut case. (Really, the person was crazy and I saw no way to negotiate with a crazy person, so I let it go.)

Anyway, most all of these C&D letters like to site the Anticybersquatting Consumer Protection Act. But what they fail to mention is that the act only applies to "famous" trademarks. In the AveryDennison case, the judge ruled Avery Dennison was NOT famous, and therefore the ACPA did not apply. I also note the Scientology cases.... There the CoS sent letters to the Hosting companies to take down the offending sites (Critical of the CoS) and use the ACPA to base their claims. However the various CoS cases have been copyright, not trademark cases. And the ACPA has nothing to do with copyright. And their lawyers darn well know this, but they are not above a little legal bullying, and so try to make the letters sound "tougher' and quote the ACPA.

So, the next time you get a C&D letter, and they try to claim their trademark is "famous" don't fall for it. It's lawyer bullying. Famous are things like "Cher" "Madonna" "ebay" etc. Most domain disputes do not really fit the law of the CPA.

Now the above does not necessarily apply to arbitration, where WIPO people are usually ignorant of domain holders rights. However, if a US Fed. Court is threatened, you do have an answer for that.

hth

Mythios · 10-08-2002, 10:55 PM

Good info, thx Max.

**jberryhill** · 10-09-2002, 09:46 PM

Hello,

I am new to dnforum, but certainly not new to this area of the law. If the post above is indicative of the general level of awareness of the law, then I will probably stick around for a while.

The Avery-Dennison case was decided by the Ninth Circuit on August 23, 1999. The date, in a legal citation, is in the parenthesis at the end. The cite for the decision is:

Avery-Dennison v. Sumpton, 189 F.3d 868, (Ninth Cir. 1999)

The ACPA became law on November 29, 1999.

For those of you familiar with a calendar, please note that there is no way in this reality that Avery was decided under the ACPA.

Avery was decided under the FTDA (Federal Trademark Dilution Act) which _does_ only apply to famous marks. One of the very reasons that the ACPA was passed was the observation that cybersquatting is not really "trademark infringement" since it does not involve sales of infringing goods or services. So, many mark owners were trying to stretch the FTDA to cover cybersquatting (e.g. the Panavision case), but it was not really a "good fit" in all circumstances. Hence, the ACPA was an attempt to nail down this "cybersquatting" thing, which still means different things to different people.

The ACPA is not limited to famous marks, and it is not limited to registered marks. Any suggestion that the Avery case has anything to do with the ACPA is simply uninformed nonsense.

Regards,

John Berryhill

**garet** · 10-09-2002, 09:52 PM

>then I will probably stick around for a while.

PLEASE do. It's nice to have you here. Thanks.

**maxheadroom** · 10-09-2002, 09:59 PM

Then I'll stand corrected.

**jberryhill** · 10-09-2002, 11:23 PM

I prefer to be corrected sitting down. It's much more comfortable. I haven't found UDRP panelists to be "ignorant" in general, and have seen plenty of domain registrants aim squarely at their own foot. With something like 3 outs for 24 at-bats in UDRP defenses, I try not to warm the bench too much.

**draqon** · 10-09-2002, 11:33 PM

yes but the question is, if you were to do battle against Avi Goldberger who would win?

**jberryhill** · 10-09-2002, 11:47 PM

That is a question for which neither Ari nor I would want to find an answer.

I believe we would both win. People have kind of an odd conception about lawyers and "battle" and "winning" and "losing". A good attorney seeks to solve problems, not fight them.

**GeorgeK** · 10-10-2002, 02:11 AM

Welcome, John!

Glad to see you on this forum.

**Drewbert** · 10-10-2002, 11:57 AM

Good to see you here John.

Fight the good fight!

**basscaster** · 10-11-2002, 05:23 PM

John,

Please do stick around, so when I need to retain you (heaven forbid), I'll know where to find you.

Seeing Greg get hit with CD's for generic 3 letters bothers me -